Goldman, Sachs & Co. v. SUPRATIK BASU
Claim Number: FA1508001633381
Complainant is Goldman, Sachs & Co. (“Complainant”), represented by Steven T. Shelton of Cozen O'Connor, New York, USA. Respondent is SUPRATIK BASU (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gsbankusa.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and that, to the best of his or her knowledge, he has no known conflict in serving as Panelist in this proceeding.
David L. Kreider, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2015; the Forum received payment on August 19, 2015.
On August 14, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gsbankusa.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gsbankusa.com. Also on August 24, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 17, 2015.
On September 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
By the sworn affidavit of its Chief Administrative Officer, Goldman Sachs Bank USA avers that it is a wholly owned subsidiary of The Goldman Sachs Group, Inc. Originally named The Goldman Sachs Trust Company upon its establishment in 1990, the entity changed its name to Goldman Sachs Bank USA in November 2008. The Complainant, Goldman, Sachs & Co., owns the rights in the GS BANK USA mark, and licenses GS BANK USA the right to use the GS BANK USA mark ('Mark'). Through its use of the Mark in commerce since 2008, Complainant claims common law trademark rights in the Mark. Complainant further notes that it owns twenty-eight pending trademark applications for the Mark, which are listed in Complainant's Annex 'B'.
Complainant avers that it became aware of the disputed domain name <gsbankusa.com> in July of 2015, and that Respondent is not, and has never been, authorized to use the Mark or any variation thereof.
The website to which the disputed domain name resolves states 'gsbankusa.com is for sale'. The site lists the Respondent as 'SELLER' and invites visitors to 'make an offer for this domain name'.
Complainant offers the sworn affidavit of the owner of Valhalla IP, a New York firm specializing in domain names, social media and intellectual property management, hired by Complainant on July 9, 2015. The affidavit avers that Respondent owned 269 other domain names on or about that date.
Unsuccessful in communicating with Respondent through the contact information available on the website associated with the disputed domain name, Valhalla IP employed the Registrar's GoDaddy Domain Buy Service to attempt to purchase the domain on Complainant's behalf and at its instruction. The affidavit recites:
'On July 19, 2015, a GoDaddy representative communicated with me by telephone and stated that Mr. Basu [Respondent] assumed the intended purchaser of the Domain was Goldman Sachs because only Goldman Sachs would be interested in the Domain'.
The Valhalla IP affidavit concludes:
'By email dated July 20, 2015, attached hereto as Exhibit A, GoDaddy communicated to me that the owner of the Domain [Respondent] would be willing to sell it for six hundred thousand U.S. dollars ($600,000.00)'.
Complainant has offered in evidence a 'Lexis Advance' database search dated August 13, 2015, which reflects 149 results or 'hits' for the search term 'GS Bank USA' sourced from 'US Official News', 'FD (Fair Disclosure) Wire', Dow Jones Institutional News', 'Business Wire', 'Benzinga,com', 'The Wall Street Journal', and other public sources. The reports identify 'Goldman Sachs Bank USA (GS Bank USA)' as 'a New York State-chartered bank' and a depository institution.
B. Respondent
Respondent avers that the disputed domain name <gsbankusa.com> 'stands for Green Solutions (GS) BANK of ideas pioneered in USA for pollution free environment, which would be displayed on the site itself when developed', and notes that all the words and letters contained in the name are 'very common and generic' and open to everybody for their use.
Respondent observes that Complainant's earliest registration of the Mark occurred on July 13, 2015, a date later than June 27, 2015, when Respondent registered the disputed domain name.
Respondent submits as evidence an October 13, 2008, Press Release from the website of the New York Department of Financial Services, which recites in relation to the Bank:
'Governor David A. Paterson today announced that the Goldman Sachs Group Inc. will headquarter its U.S. commercial bank in New York City and has applied to the New York State Banking Department to become a full service state‐chartered bank'.
The October 13, 2008, Press Release further elaborates:
'Goldman Sachs currently has a Utah‐based industrial loan company and has had a New York‐chartered trust company, Goldman Sachs Trust Company, since 1990. Goldman Sachs has filed an application with the Banking
Department to turn the trust company into a full service New York bank with trust powers, under the name Goldman
Sachs Bank USA. The Utah company will be merged into the New York bank, retaining a branch in Utah. Goldman
Sachs Bank USA will have approximately $150 billion in assets. A number of existing Goldman Sachs businesses will also become part of Goldman Sachs Bank USA'.
Respondent additionally submits a Consumer Financial Protection Bureau report, which shows that Goldman Sachs Bank USA, in the State of New York, held total assets of $88,832,000 as at June 30, 2011; a September 7, 2015 Goldman Sachs Press Release, announcing that Goldman Sachs Bank USA would assume certain online deposit accounts of GE Capital Bank of approximately US$ 8 billion; a July 2, 2013, letter from the Board of Governors of the Federal Reserve System addressed to Goldman Sachs Bank USA, concerning generally the Bank's transitioning out of its swaps-dealing business and its compliance with certain regulatory requirements under the Dodd-Frank Act; and a publicly filed 'Goldman Sachs Bank USA' Resolution Plan dated September 27, 2013.
The Resolution Plan identifies the Bank in the following terms:
'GS Bank is a New York State-chartered bank and a member of the Federal Reserve System. It is supervised by the Federal Reserve Board, the New York State Department of Financial Services and the Consumer Financial Protection Bureau, and is a member of the FDIC. As a registered swap dealer, GS Bank is also regulated by the U.S. Commodity Futures Trading Commission (the “CFTC”). In March 2013, the Financial Services Authority authorized the Bank to operate a branch in London, United Kingdom (the “London Branch”). The London Branch is regulated by the
Financial Conduct Authority (“FCA”) and the Prudential Regulation Authority (“PRA”).
The Bank’s activities include the acceptance of client and brokered deposits; lending to high-net worth individuals, institutional and corporate clients; the origination of bank loans and mortgage loans; entering into interest rate, credit, currency and other derivatives; and agency lending.
GS Bank has a number of business lines that are core to its franchise, allow it to serve its clients, and achieve its strategic objectives'.
The Resolution Plan describes in some detail the Bank's 'core' business lines, which include deposit taking, private bank lending, credit origination, mortgages and interest rate derivative products.
The Resolution Plan reflects that the Bank's net earnings for the year ended 2011 (the earliest year shown in the Plan) totaled US$ 1.33 billion, and recites in a footnote that 'the Bank's Financial Statements are available on our website at www.goldmansachs.com'.
Respondent points to the above-referenced annexures to refute the Complainant's assertion that the Mark has been in use since 2008, asserting that 'no mention of the term "GS Bank USA" can be found once' in the documents. Respondent further argues that Complainant's Lexis Advantage search on August 13, 2015, reflects no use of the Mark after October 1, 2014.
Respondent denied that he has made use of the disputed domain name and refutes any 'intent for any commercial gain to misleadingly divert consumers or to tarnish the trademark'.
Finally, Respondent asserts that he was unaware 'as an Indian citizen' before receiving the Complaint of the Complainant's trademark or 'non-existent service mark', and did not register the disputed domain name in 'bad faith'.
Respondent refers to Complainant's 'numerous deceptive and immoral failed attempts to acquire the domain name,' further arguing that the Valhalla IP affidavit is 'misleading' and unworthy of belief because the GoDaddy Buy Service closed the offer some three (3) hours before the time of the Respondent's demand of $600,000.00 for the disputed domain name.
The Respondent asks this Panel to make a finding of reverse domain-name hijacking by the Complainant.
The Complainant expressly bases its Complaint ‘upon the use and ownership of its mark GS BANK USA, which has acquired substantial goodwill through its use by Complainant in global commerce', that is, on its purported trademark rights under the common law. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). This is understandable, given that the Complainant's twenty-eight (28) trademark filings are, in every instance, later in time than the Respondent's registration of the disputed domain name on June 27, 2015.
Separately, Respondent's characterization of Complainant's attempts to purchase the disputed domain name from him, as being 'deceptive and immoral', appears from a plain reading of the Response to be grounded in the fact that Goldman Sachs & Co. utilized an investigator to 'reach out' to Respondent anonymously, rather than communicating with Respondent in a direct and, presumably in the mind of Respondent, a more straightforward manner.
As to why Complainant chose to adopt this approach, Complaint relevantly explains:
'Because GS&Co is a well-known investment bank with a household name, it has discovered over time that when it reaches out to such third parties directly, they generally adopt a "lottery" mentality and ask for outrageous sums of money.
In the event, as Complaint avers, Respondent told the investigator that he had assumed that the investigator must be representing GS&Co., because only GS&Co. would be interested in purchasing the disputed domain name.
Moreover, Complainant's indirect approach appears to have been warranted in the present circumstances because, as Complaint alleges and this Panel accepts as having been established by the evidence, Respondent demanded the sum of US$ 600,000.00 to transfer the domain name to the Complainant. The Panel notes that Respondent does not deny demanding this outrageous sum.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel has no hesitation in finding under Policy ¶ 4(a)(i) that the disputed domain is confusingly similar to the GS BANK USA mark.
The Panel further recognises the seriousness of the risk identified in the Complaint that customers entrust their banks with all manner of confidential, personal financial information, and that dire consequences might foreseeably result were such information to be obtained by 'the wrong people' as a result of customer confusion arising from Respondent's use of the disputed domain name.
Complainant asserts that it has common law rights in the GS BANK USA mark dating back to its first use of the mark in commerce in November 2008, and that that it has continously used the GS BANK USA mark since that date in affiliation with its banking services and that the Mark has developed significant name recognition.
Traditionally, a secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
The Respondent asserts that Complainant, through Lexis database searches, has not adequately demonstrated secondary meaning. More specifically, the Respondent asserts that Complainant's Lexis Advantage search of the term 'GS Bank USA' reflects Complainant's public use of the Mark between the dates of September 21, 2008, and October 1, 2014 only, but does not reflect any usage of the Mark by Complainant after this latter date, which suggests that Complainant's use of the Mark may have been discontinued, or Complainant's claim to the Mark abandoned, after October 1, 2014.
The Panel notes, however, that Complainant's website (www.goldmansachs.com), which is provided in the footnote at page 5 of the Goldman Sachs Bank USA Resolution Plan 2013 offered in evidence by the Respondent, bears the title 'GS BANK USA' and repeatedly uses the Mark. See, URL: http://www.goldmansachs.com/what-we-do/investing-and-lending/banking/index.html, last visited on 23 September 2015.
Furthermore, an 'Internet Archive Wayback Machine' search of this same URL conducted by the Panel, shows that the Complainant was using the Mark on its public website on March 22, 2015 (a random date when Complainant's website was 'crawled' by the Wayback Machine software), a date some five (5) months after October 1, 2014, yet still three (3) months before Respondent registered the disputed domain name, and fully four (4) months before Complainant had notice of Respondent's registration of the disputed domain name, and thereafter up to the present day.
On balance, the Panel is satisfied that any purported defence of abandonment or failure of continuous use of the Mark by Complainant after October 1, 2014, even if coherently asserted, would be unavailing to Respondent.
The Panel finds that Complainant has established common law rights by its evidence that the GS BANK USA mark has taken on a secondary meaning, by its continuous use in commerce and in the banking industry, in association with Complainant’s business, that is, the operation, since 2008, of a bank of the same name, continuously chartered by the State of New York and supervised by the Federal Reserve Bank of New York, the New York State Department of Financial Services, and the Consumer Financial Protection Bureau, which is a member of the Federal Deposit Insurance Corporation.
The Complaint alleges that Respondent has no rights or legitimate interests in the disputed domain name; is not affiliated with Complainant; and has not been authorized to use the GS BANK USA mark. Furthermore, Respondent’s willingness to sell the disputed domain for an amount grossly in excess of out-of-pocket costs demonstrates Respondent's lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel finds that the respondent has failed to show that it does have rights or legitimate interests in the disputed domain name, such as would defeat the Complainant's prima facie case under Policy ¶ 4(c)(ii).
The Panel finds that the Respondent's assertion that it is preparing to use the disputed domain name for a purpose unrelated to Complainant’s business, that is, to roll out 'free', environmentally friendly, made-in-the-USA solutions across India, is fatally undermined by Respondent's own conduct in proactively advertising the disputed domain name for sale on his website.
The Panel finds, moreover, that Respondent's claim that he was unaware before receiving the Complaint of Complainant's trademark is incredible and unworthy of belief. The panel notes, moreover, that Respondent has not offered any contemporaneous evidence (e.g., a business plan; designs, drawings or proposed web layouts; technology platform, web hosting service agreements or media-related contracts) tending to show that Respondent had taken steps in preparation of launching his would-be 'free' website bank of ideas for a pollution free environment.
The Panel finds that Respondent’s sole use of the <gsbankusa.com> domain name was to offer it for sale, by posting a 'for sale' notice on the website to which the disputed domain name resolves. See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith). Furthermore, Respondent sought to extort an exorbitant sum (US$ 600,000.00) from Complainant, after having concluded that the proposed purchaser of the disputed domain name was Complainant, a leading global financial institution. The Panel decides that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
For the reasons set forth above, the Panel need not address Respondent's request for a finding of reverse domain-name hijacking by the Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gsbankusa.com> domain name be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Esq., Panelist
Dated: 24 September 2015
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